1.3.8.7 Box VI Certain Documents Cited

Date Published

Where the claimed priority is valid, list all "P" category patent documents which are relevant for novelty or inventive step purposes (except category “A” documents) along with their citation category or categories in Box VI, Item 1, but only on the proviso that the cited document has an earlier priority date than a claim of the application subject to IPE, [Rule 33.1(c) Rule 64.3 Ad. Inst. 507(b)]. The relevance of the citation - that is, whether it be to novelty or inventive step - should also be indicated, to the extent of specifying the particular claims to which the citation is relevant in these respects.  If the relevance is to novelty, then the particular passages or drawings in the cited document which are relevant should be specified. This applies particularly if this information would be potentially useful to Australian applicants in regard to "whole of contents" issues in the national phase in Australia. [Rule 64.3 Rule 70.10]

Where Box VI contains an indication, a cross-reference to Box VI must be made in Box V (even if there is no other document cited in Box V) PERP code for P & E documents.

Occasionally citations indicate a divisional (AU) or continuation-in-part (US) priority claim in the Bibliographic data (Usually beside INID code (60)). In this situation enter the earliest declared priority date of the citation in Box VI. An assumption of validity is given to priority claim.

Where the claimed priority is valid, P,X or P,Y  NPL documents cited in the ISR are not to be listed in Box V or Box VI of the ISO, IPEO and IPRPII.  See Rule 64.3 Rule 70.10 of the PCT.  Only P,X and P,Y patent documents should be listed in Box VI, and on the proviso that the cited document has an earlier priority date than a claim of the application subject to IPE. For P, X patent documents, the level of details for novelty and inventive step as shown in Box VI of 1.3.10 Annex A and 1.3.10 Annex D respectively will suffice. It may also be noted that there is no need to provide positive statements in respect of Novelty and inventive step for the above documents. In a rare circumstance, if it considered necessary to cite P, A patent documents, they should be discussed in Box V without listing them in Box VI.

However if the claimed priority is invalid, both NPL and patent documents cited in the ISR as P,X or P,Y are to be discussed in Box V of the ISO, IPEO and IPRPII as these documents can be treated as published X and Y documents.

It should be noted that regardless of whether a claimed priority is valid or not, E, patent documents cited in the ISR should always be listed in Box VI of the ISO, IPEO and IPRPII, but only on the proviso that the cited document has an earlier priority date than a claim of the application subject to IPE and the claim is not novel in light of the cited document. The same level of detail as mentioned above for P,X patent documents will suffice.

Any public disclosures (e.g. exhibitions, use, oral disclosure or other non-written means) before the relevant date are indicated in Box VI Item 2. [Rule 64.2 Rule 70.9]